David Andrew. Fish

Patent Trials and Appeals Board

Jul 25, 2019

13264210 - (D) (P.T.A.B. Jul. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/264,210 01/03/2012 David Andrew Fish 2009P00699WOUS 8943
24737 7590 07/25/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
07/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID ANDREW FISH
____________
Appeal 2018-008405
Application 13/264,210
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
DEBRA L. DENNETT, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–14. (Appeal Br. 2.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed October 13, 2011, (citations to published patent
application US 2012/0114528 A1; published May 10, 2012) (“Spec.”); Non-
Final Office Action mailed November 1, 2017 (“Non-Final Act.”); Appeal
Brief filed March 30, 2018 (“Appeal Br.”); Examiner’s Answer mailed June
15, 2018 (“Ans.”); and Reply Brief filed August 15, 2018 (“Reply Br.”).
2 Appellant identifies Koninklijke Philips N.V. as the real party in interest.
(Appeal Br. 3.)
Appeal 2018-008405
Application 13/264,210

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THE INVENTION
Appellant states that the invention relates to the field of DNA
sequencing, especially DNA sequencing using time controlled fluorescence
detection for identification of DNA bases. (Spec. ¶ 1.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A device for time controlled fluorescence detection for
DNA sequencing applications comprising:
a containment area including sequencing reaction
components including fluorescent labeled nucleotides;
a first light source configured to emit a first light
pulse at a first wavelength, and a second light source
configured to emit a second light pulse at a second
wavelength, the first wavelength being different from the
second wavelength, and the first and second light pulses
being incident alternately upon the containment area;
a detector pixel, arranged to cooperate with the
containment area, the detector pixel comprising:
a photodetector configured to detect and process
light emanating from the containment area to produce
detection information comprising an electrical signal; and
an output configured to transfer the electrical
signal from the detector pixel;
a gate configured to deactivate the photodetector
rendering the photodetector inactive during firings of the
first light pulse and second light pulse, thereby
preventing the photodetector from direct detection of the
first and second light pulses emitted by the first and
second light sources, wherein
the detector pixel further comprises a first
accumulator and a second accumulator, arranged to
cooperate with the photodetector and the output,
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the first accumulator configured to collect the
detection information from the photodetector when the
first light pulse incident upon the sequencing reaction
components to detect a specific DNA base that has a
fluorescent label that exhibits strong absorption of the
first light pulse having the first wavelength; and
the second accumulator configured to collect the
detection information from the photodetector when the
second light pulse incident upon the sequencing reaction
components to detect a different specific DNA base that
has a fluorescent label that exhibits strong absorption of
the second light pulse having the second wavelength.
(Appeal Br. 20–21, Claims Appendix.)

REJECTIONS
1. The Examiner rejected claims 1–14 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. (Non-Final Act. 4–7.)
2. The Examiner rejected claims 1–14 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. (Non-
Final Act. 7–8.)
3. The Examiner rejected claims 11 and 12 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
(Non-Final Act. 8–10; Ans. 3–9.)
Rejection 1
ISSUE
The Examiner found that the written description is inadequate with
respect to “the array comprising number of devices” and various
relationships given to the constituent elements in claims 11 and 12, as well
as the “gate circuitry” of claims 1–12. (Non-Final Act. 4.) In this regard,
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the Examiner found the Specification to be “postulative and prophetic in
nature” and too general to provide support for the arrangements recited in
the claims. (Id. at 4–6.) The Examiner found also that the disclosure with
respect to what is structurally meant for the components to be “paired” is
inadequate. (Id. at 5–6.)
Appellant argues that in view of the Specification, one of ordinary
skill in the art would have understood the written description to be adequate
with respect to the gate circuitry recited in the claims. (Appeal Br. 9–11.)
Appellant argues that the Examiner’s position regarding the array
comprising a number of devices is not well founded, because Appellant need
not disclose working examples in order to satisfy the written description
requirement. (Id. at 12–13.) Appellant argues also that the disclosure
provides adequate support for the cooperative arrangement of components,
including that certain components are “paired.” (Id. at 13–14.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s findings
that the claims on appeal lack written description support?

DISCUSSION
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted).
Compliance with the written description requirement is a question of fact.
Id. at 1562–63.
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We are persuaded by Appellant’s argument that the Examiner
reversibly erred in rejecting claims 1–14. That is, although the Examiner’s
rejection sets forth that the disclosure in the Specification is “postulative and
prophetic” and that there are certain technical details of the arrangement of
constituents not disclosed in the Specification, the Examiner does not
adequately explain the basis for such findings with respect to what one of
ordinary skill in the art would understand from the Specification. (Non-
Final Act. 5.) In particular, although noting that certain paragraphs of the
Specification and Figures only disclose general descriptions, the Examiner
does not sufficiently explain why one of ordinary skill in the art would have
been unable to implement the devices and arrays recited in the claims.
In this regard, the Specification describes the sequencing reaction
components, the arrangement of light pulses, particular arrays, transistor
circuits, detectors, sequencing techniques, as well as example sequence
firing arrangements and look up tables. (Spec. ¶¶ 20, 22, 31, 36, 37, 53–113,
and Figs. 1–7.) The Examiner’s explanation does not sufficiently address
the deficiencies in these disclosures or take into account what one of
ordinary skill in the art would have understood from them.
With respect to the “gate circuitry” identified by the Examiner as
being deficient, to the extent the Examiner has relied on the “plain meaning”
of “gate” to be a “hinged barrier” (see Non-Final Act. 6; Ans. 5–6), we agree
with Appellant that the Examiner’s definition is not applicable to the current
claim, and is better understood by its well-known meaning in the context of
logic circuitry. (Appeal Br. 10–11.)
Regarding “paired” as recited in claim 11, the Specification discloses
that a containment area is paired with a detector pixel. (Spec ¶¶ 53, 68, 70,
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Figs. 1, 6, and 7.) We agree with Appellant that in view of the Specification
and drawings, one of ordinary skill in the art would have understood the
relationship between the two. (See Reply Br. 5–6.) The Examiner’s
statement that “[t]he disclosure is far too general in discussion” (Ans. 5) is
not sufficient to support the finding that “one of ordinary skill in the art
would not have been apprised of the invention by the way of the disclosure
herein.” (Ans. 12.) As discussed above, the Examiner has not provided
sufficient discussion about why the lack of certain express disclosures would
mean that one of ordinary skill in the art in view of the knowledge possessed
by such person would not have understood Appellant to be in possession of
the subject matter recited in the claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–14 as
failing to comply with the written description requirement.

Rejection 2
ISSUE
The Examiner determined that claims 1–14 are indefinite because it is
unclear how various operations within the device are carried out, and
because the claims do not recite a controller that is configured or
programmed to carry out the operation recited in the claims. (Non-Final
Act. 7–8.) The Examiner also determined that the functionalities of the
accumulators are unclearly defined. (Id.) Regarding claims 7, 8, 13, and 14,
the Examiner determined that it was unclear how any particular timing
differential may be established in the pulsing of the excitation beams. (Id. at
8.)
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Appellant contends that the components not in the claims identified by
the Examiner are well-known, such as a pulsed light source, and that there is
no requirement to recite the components identified by the Examiner as long
as the boundaries of the subject matter protected are made clear. (Appeal
Br. 15–17.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s findings
that the claims on appeal are indefinite?

DISCUSSION
During examination, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014) (per curiam) (citing Manual of Patent
Examining Procedure § 2173.05(e)). The test for compliance for 35 U.S.C.
§ 112, second paragraph, is whether the claims set out and circumscribe a
particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
We generally agree with Appellant for the reasons expressed in the
Appeal Brief. (Appeal Br. 15–17.) That is, we agree with Appellant that
pulsed laser sources are well known to one of ordinary skill in the art (see
Spec. ¶ 31; Appeal Br. 16), and that in light of the Specification disclosures
discussed above, we agree with Appellant that one of ordinary skill in the art
would have understood the particular details and requirements (controllers,
processors) surrounding the implementation of the functions of the
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components recited in claim 1. The same rationale applies to claims 7, 8,
13, and 14. As a result of the detail provided in the Specification, we do not
subscribe to the Examiner’s position that one of ordinary skill in the art
would have not appreciated the metes and bounds of the pulsed periods and
time differentials recited in those claims.
As a result, we reverse the Examiner’s rejection of claims 1–14 as
indefinite.

Rejection 3
The Examiner determined that claims 11 and 12 are indefinite
because, similar to Rejection 1, the relationship of how the plurality of
containment areas are related to one another to provide an operative array is
not clear. (Non-Final Act. 8–9.) The Examiner also determined that the
structural relationship defined by the term “paired” is unclear given the
generality of the disclosure. (Id. at 9–10.)
Appellant relies on similar arguments as discussed above, that one of
ordinary skill in the art would understand what is meant by “paired” and
would recognize how to configure the components as recited in the claims.
(Appeal Br. 17–18.)
We agree with Appellant that one of ordinary skill in the art would
have understood the metes and bounds of claims 11 and 12 in light of the
Specification. (Spec ¶¶ 53, 68, 70, Figs. 1, 6, and 7.) Accordingly, we
reverse the Examiner’s rejection of claims 11 and 12 as indefinite.
DECISION
We reverse the Examiner’s decision rejecting claims 1–14.
REVERSED